Takeaway: A petitioner that wishes to institute review on several alternative grounds of unpatentability must explain how the various alternatives are distinguishable. Otherwise, the Board may exercise its discretion and institute on one of the grounds and deny the rest as duplicative.
In its Decisions on Institution, the Board instituted an inter partes review of claims 1-31 of the ’406 patent on grounds asserted in IPR2014-00535 (the ’535 petition), but denied institution on the grounds asserted in IPR2014-00536 (the ’536 petition) and IPR2014-00537 (the ’537 petition). The ’406 patent “describes scanning circuit structures for scanners capable of reducing distortion during high-speed image signal transmission.”
The Board construed several limitations using the broadest reasonable construction standard. These terms included limitations regarding “instructions” and “signals,” the term “converting,” “optical sensor circuit module,” and several means-plus-function limitations.
Turning to the asserted grounds of unpatentability in the ’535 petition, Petitioner asserted many alternative grounds, which the Board separated in two groups – one based on the Tsuboi reference and one based on the Kono reference. The Board first found that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to the grounds based on Tsuboi. With respect to the alternative grounds based on Kono, the Board was not convinced that the additional combinations would “add substantively to the grounds on which” the Board had already instituted. The Board found that Petitioner had alleged in the ’535 petition that the Kono reference provided the same teaching as Tsuboi but “in greater detail.” Thus, in exercising its discretion under 35 U.S.C. § 315(d) to secure “the just, speedy, and inexpensive resolution of every proceeding,” the Board declined to institute the Kono-based grounds
The ’536 and the ’537 petitions also challenged claims 1-31 of the ’406 patent on several different grounds. In the ’536 petition, the grounds of unpatentability were based on the additional Kaneko and Chizawa references, while the ’537 petition raised grounds of unpatentability based on Hayashi. In total, as the Board pointed out, Petitioner challenged all 31 claims of the ’406 patent “through no fewer than 49 grounds” across three petitions. However, Petitioner did not “address the duplicative nature of its arguments across Petitions.” The Board noted that Petitioner relied upon the same Carley declaration in support of all three petitions. The Carley declaration was generic to all petitions and did not provide an explanation how any combination of prior art references was distinguishable or better than another. Thus, the Board considered all three petitions together and held that the grounds raised in the ’536 and ’537 petitions would not add substantively to the instituted grounds in the ’535 petition.
Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00535; IPR2014-00536; IPR2014-00537
Paper 9: Decisions on Institution of Inter Partes Review
Dated: September 24, 2014
Patent: 7,315,406 B2
Before: Thomas L. Giannetti, James A. Tartal, and Patrick M. Boucher
Written by: Boucher
Related Proceeding: Intellectual Ventures I LLC v. Canon Inc., 13-cv-473-SLR (D. Del.)